CAFC Says Samsung Failed to Prove it Deserves Transfer of Patent Infringement Case to California

Samsung today lost its bid at the U.S. Court of Appeals for the Federal Circuit (CAFC) to transfer a suit brought against it by Mullen Industries LLC from the United States District Court for the Eastern District of Texas  to the Northern District of California.

Mullen sued Samsung Electronics Co., Ltd. (SEC) and Samsung Electronics America, Inc. (SEA) in Judge Rodney Gilstrap’s Texas court for infringement of its patents through Samsung smartphones, tablets, and watches, including Google Maps and Wear OS functionalities, both of which were developed by Google. Samsung moved to transfer the case to the Northern District of California (NDCA) based mostly on Google’s presence there, and the district court denied the motion. Samsung’s motion had stated that “SEA has offices with over 200 regular full-time employees in the NDCA” but the district court ruled that Samsung had failed to provide sufficient evidence of the facilities and their operations to support transfer. The district court further found, among other factors, that SEA has a large presence in the ED of Texas with connections to the case, that Google was not a party, and that most of the technical documents were outside either forum, in Korea.

While the NDCA would be more convenient for Google witnesses and SEC witnesses in Korea, “any comparative advantage to NDCA in this regard was tempered by the presence of potential SEA employee witnesses in EDTX, including that “Defendants have tested at least one of the accused functionalities in this District,” and the fact that Samsung used non-Google software or an adapted version of Google’s software for two of the three accused functionalities,” said the district court. The court found the remaining factors neutral and ultimately denied transfer.

In its Order denying Samsung’s petition for a writ of mandamus, the CAFC said that Samsung had failed to meet the “demanding standard” for establishing entitlement to mandamus relief.  Most notably, the CAFC said that “Samsung dedicated a perfunctory sentence in its transfer motion to assert venue over SEA in NDCA was proper,” causing the district court to focus “on that de minimis presentation.” Samsung’s argument that the court should have given more weight to the convenience of the NDCA for potential witnesses and sources of proof, the CAFC said it could not say there was a clear abuse of discretion in the court’s conclusion or that Samsung had shown the NDCA was “clearly more convenient.”  In a footnote, the CAFC also noted that Samsung’s argument that “third-party potential witnesses who can be compelled to testify by way of subpoena have been identified in NDCA but not in EDTX” did not hold significant weight because “no individual has been identified as unwilling to testify” here. Thus, because SEA “maintains significant relevant operations” in the EDTX and one of the accused products was tested there, the court’s findings were plausible, said the CAFC.